Ex Parte May et al

Patent Trial and Appeal Board

Oct 15, 2012

11838384 (P.T.A.B. Oct. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/838,384 08/14/2007 Yves May 042333-0475 6639
23524 7590 10/16/2012
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
LUDLOW, JAN M
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
10/16/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT
TRIAL AND APPEAL BOARD
____________

Ex parte YVES MAY and BERNARD ROUSSEL
____________

Appeal 2011-008021
Application 11/838,384
Technology Center 1700
____________

Before FRED E. McKELVEY, ROMULO H. DELMENDO, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
The named inventors (collectively hereinafter “Appellant”) appeal
under 35 U.S.C. § 134 from the rejection of claims 1-10 and 13-22, which
are directed to a sampling pipette and pipette shaft. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal:
1. A shaft for a sampling pipette, the shaft comprising:

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a first cylindrical portion configured to extend from a lower end
of a pipette, wherein a first cross section of the first cylindrical portion is
perpendicular to a longitudinal axis of the pipette and has a first diameter,
the first cylindrical portion including an upper end opposite the lower end;

a first annular shoulder including

a first transition end adjacent the upper end of the first
cylindrical portion;

a second cylindrical portion, wherein a second cross
section of the second cylindrical portion is perpendicular to the longitudinal
axis of the pipette and has a second diameter; and

a first end opposite the first transition end, the second
cylindrical portion extending from the first transition end to the first end;
and

a second annular shoulder including

a second transition end adjacent the first end of the first
annular shoulder;

a third cylindrical portion, wherein a third cross section
of the third cylindrical portion is perpendicular to the longitudinal axis of the
pipette and has a third diameter; and

a second end opposite the second transition end, the third
cylindrical portion extending from the second transition end to the second
end;

wherein the second diameter is greater than the first diameter;
wherein the third diameter is greater than the second diameter;
and
further wherein the second diameter and the third diameter are
selected so that a pipette tip contacts at least a portion of the second
cylindrical portion to provide a seal and at least a portion of the third
cylindrical portion to provide a progressive stop when the pipette tip
is mounted on the shaft.
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The Examiner relies on the following evidence of unpatentability:

Sheehan US 4,679,446 July 14, 1987

THE REJECTIONS
Claims 1 and 13 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Sheehan. Claims 2-10 and 14-22 stand rejected under
§ 103(a) as unpatentable over Sheehan.

ISSUES
The following dispositive issues arise:
1. Does the Examiner err in finding that Sheehan describes the
subject matter of claims 1 and 13, including the limitations that require “a
progressive stop”?
2. Does the Examiner err in concluding that claims 2, 3, 15, and
16 (which limit the “difference between the third diameter and the second
diameter” of the shaft) and claims 9, 10, and 22 (which limit the “difference
between the second diameter and the first diameter” of the shaft) are
unpatentable over Sheehan?
3. Does the Examiner err in concluding that claims 5, 6, 18, and
19 (which limit the length over which “the first transition end and the second
transition end extend . . . in the direction of the longitudinal axis”) and
claims 7, 8, 20, and 21 (which limit the length over which “the first annular
shoulder and the second annular shoulder extend . . . in the direction of the
longitudinal axis”) are unpatentable over Sheehan?
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4. Does the Examiner err in concluding that claims 4 and 17,
which require that “the first transition end and the second transition end are
rounded,” are unpatentable over Sheehan?
5. Does the Examiner err in concluding that claim 14, which
requires that “the sampling pipette is a multi-channel pipette,” is
unpatentable over Sheehan?
We answer questions 1, 4, and 5 in the negative and affirm the
rejection of claims 1, 4, 13, 14, and 17. We answer questions 2 and 3 in the
affirmative and reverse the rejection of claims 2, 3, 5-10, 15, 16, and 18-22.
We thus AFFIRM IN PART.

ANALYSIS
Issue 1 (Independent Claims 1 and 13)
Appellant argues claims 1 and 13 as a group. App. Br. 12. We select
claim 1 as representative of the group. Claim 13 stands or falls with claim 1.
37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Sheehan describes every limitation of claim 1
including “a progressive stop.” Ans. 4; see Sheehan, Fig. 3. Specifically,
regarding “the progressive stop” of claim 1, which is provided by the third
cylindrical portion of the shaft, the Examiner finds that in Sheehan “the third
portion is in the vicinity of element 60.” Ans. 4. Furthermore, “the upper
edge of the pipette tip is shown in contact with the shaft above the annular
space 60.” Id. In the Examiner’s view, this point of contact “constitutes ‘a
progressive stop’ in that the tip inherently fits sealingly to the shaft in this
region so as to permit venting through channel 58 and rather than through
the top of the tip, thus providing a stop by friction fit.” Id. at 4-5.
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Appellant disagrees, arguing that Figure 3 in Sheehan, upon which the
Examiner relies, “clearly shows that the ‘second shoulder 48’ abruptly stops
further depression of the tip 54.” App. Br. 12. Appellant points out that in
Sheehan the dispensing tips “all generally extend to about the same position
along the sidewall of the distal end of the tubular body” and, further, that
“[t]he small replaceable dispensing tip 52 has a pair of shoulders which mate
with the first shoulder 50 and second shoulder 48 of the distal end.” Id. at
12-13 (quoting Sheehan 8:58-60 and 7:14-16 (which refers to Figure 2))
(emphasis omitted). On that basis, Appellant contends that a pipette tip
forced onto Sheehan’s shaft experiences an abrupt stop rather than a
progressive stop in the third cylindrical portion. Id. at 13.
In response to the Examiner’s position that “the clearly rendered
Figure 3” in Sheehan “shows a gap between the shoulder of the tip and the
shoulder 48 of the shaft,” Ans. 6, Appellant inquires: “[W]hy would the
designers increase the production costs and design complexity by including
a stair-step configuration that is of no purpose? Moreover, why would
Sheehan discuss that the tip and shoulders ‘mate’ if the shoulder never
comes in contact with the tip?” Reply Br. 3 (reproducing Sheehan, Fig. 3).
We first address the proper construction of the term “progressive
stop” as it appears in claim 1. The Specification explains that “[t]he purpose
of second annular shoulder 16 is to form a centering device for pipette tip 34
during force fitting and to form a progressive stop.” Spec. ¶ [0023]. The
Specification further explains that “[u]sing first annular shoulder 14 and
second annular shoulder 16, the geometry of the contact between pipette tip
34 and shaft 10 is more reliable because the quality of this contact becomes
much more dependent on the force applied by the user during the force
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fitting operation of pipette tip 34 than it was using prior art shafts.” Id. at
¶ [0024]. Thus, “[a] high fitting force does not cause significantly greater
penetration of terminal part 2 of shaft 10 into pipette tip 34 than using a
lower fitting force largely due to the existence of the stop provided by
second contact area 41 of second annular shoulder 16.” Id. On this record,
we conclude, as does the Examiner, that the specified “progressive stop”
includes “a stop by friction fit.” Ans. 5.
We further find that a preponderance of evidence supports the
Examiner’s view that the stop provided by Sheehan’s shaft is “by friction
fit” and, thus, is a “progressive stop” within the meaning of claim 1. Id. We
agree with the Examiner that Sheehan’s shaft includes first, second, and
third cylindrical sections that increase in diameter. Ans. 4 (citing Sheehan,
Fig. 3, explaining that first section is at end of the shaft, second portion is
near elements 46, 53, and third portion is in vicinity of element 60). The
second and third cylindrical sections of Sheehan’s shaft are depicted as
contacting a pipette tip in first and second contact areas that, in our view, are
not distinguishable from the first and second contact areas described in the
Specification. Id.; compare Sheehan, Fig. 3 (first contact area near element
53 and second contact area below element 60 at base of pipette tip) to Spec.,
Fig. 2 (first contact area 40 and second contact area 41); see Spec. ¶ [0024]
(explaining purpose of first and second contact areas). We find no basis in
the record on appeal for distinguishing the “progressive stop” described in
the Specification from the stop that is depicted in Sheehan’s Figure 3.
Appellant’s argument that shoulder 48 comes in contact with tip 52 is
inconsistent with Sheehan’s Figure 3, which depicts annular space 60 as
extending to create a gap between shoulder 48 and dispensing tip 52.
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Sheehan, Fig. 3; see Sheehan 7:5-11 (describing the function of annular
space 60 relative to vent lumen 58, and explaining that annular space 60 is
“formed between the distal end and a provided replaceable dispensing tip
52”); see also Sheehan, Figs. 2 and 6. While we agree with Appellant that
Sheehan discloses that “dispensing tip 52 has a pair of shoulders which mate
with the first shoulder 50 and second shoulder 48 of the distal end,” that
disclosure cannot reasonably be construed to mean that dispensing tip 52
physically touches second shoulder 48, because such a construction is at
odds with Sheehan’s figures. Sheehan 7:12-16, Figs. 2, 3, and 6. Where “a
gap is clearly shown between the two surfaces,” we agree with the Examiner
that “this ‘mating’ is not by abutment.” Ans. 6 (citing Sheehan, Fig. 3). The
evidence thus supports the Examiner’s finding that “shoulder 48 does not
constitute a stop as alleged by Appellant.” Id. On this record, therefore, we
affirm the rejection of claims 1 and 13.

Issues 2 and 3 (Dependent Claims 2, 3, 5-10, 15, 16, and 18-22)
These claims recite limitations directed to: (1) the “difference between
the third diameter and the second diameter” of the shaft (claims 2-3 and 15-
16); (2) the “difference between the second diameter and the first diameter”
of the shaft (claims 9-10 and 22); (3) the length over which “the first
transition end and the second transition end extend . . . in the direction of the
longitudinal axis” of the shaft (claims 5-6 and 18-19); and (4) the length
over which “the first annular shoulder and the second annular shoulder
extend . . . in the direction of the longitudinal axis” of the shaft (claims 7-8
and 20-21). For ease of reference, we collectively designate these
limitations as “the specified relative dimensions” of the shaft. For the
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purpose of our discussion, it is important to keep in mind that the specified
relative dimensions of the shaft are directed to dimensional differences
among the sections of a pipette shaft having at least three sections of
different diameters.
Appellant argues that the Examiner fails to prima facie show that the
specified relative dimensions of the shaft would have been obvious over
Sheehan. See App. Br. 15-19. The Examiner points out that “[p]ipettes
come in a wide variety of sizes” and that “variations in lengths and
diameters would be expected.” Ans. 8. The Examiner also personally
inspects “an adjustable commercially available 200 ul pipette in the
Examiner’s possession” and observes that it has “a shaft diameter of ¼ inch
(6.35 mm) and shaft length of 5/16 inch (8.0 mm) below the ejector.” Id.
The Examiner finds that “variations of 0.2-2 mm in diameter and 2-8 mm in
length are within this size.” Id. The Examiner thus concludes that “[i]t
would have been obvious to optimize the dimensions of the pipette shaft of
Sheehan in order to fit known or custom made pipette tips in the manner
described.” Id. at 5.
A parameter in a patent claim must be recognized as result-effective
(namely, as achieving a recognized result) before a determination can be
made that optimizing the parameter would have been a matter of routine
experimentation. In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (a finding
that the discovery of the optimum values of a variable in a known process
would have been within the level of ordinary skill in the art must be
supported by a showing that the variable is in fact result-effective).
Critically absent here is any showing that the specified relative dimensions
of the shaft would have been recognized as result-effective variables.
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Absent such a showing, we agree with Appellant that the Examiner fails to
articulate a reason with rational underpinning as to why an ordinary artisan
would have been led to optimize the specified relative dimensions of the
shaft in Sheehan’s device.
Furthermore, neither the Examiner’s finding that pipettes are available
in various sizes, nor the Examiner’s personal observations regarding a
commercial pipette in the Examiner’s possession, are relevant to whether the
specified relative dimensions of the shaft would have been obvious at the
time of the invention. As Appellant points out, “the Examiner is focusing on
the difference in diameters of multiple commercial pipettes, as opposed to
the differences in diameters between sections of the same pipette tip.” Reply
Br. 4 (emphasis omitted). Indeed, “different diameter pipettes do not render
obvious a single pipette with different diameter sections.” Id. On this
record, we thus reverse the rejection of claims 2-3, 5-10, 15-16, and 18-22.

Issue 4 (Dependent Claims 4 and 17)
The Examiner finds that “common sense” would have led an ordinary
artisan to modify Sheehan’s pipette shaft by replacing the sharp edges with
rounded edges as specified in claims 4 and 17. Ans. 9; see Ans. 5.
Appellant contends that the Examiner puts forward a “hypothesized rational
for rounding the edges” that is neither “supported by evidence” nor “related
in a direct manner to” Sheehan. App. Br. 17-18.
An examiner’s reasoning “may include recourse to logic, judgment,
and common sense available to the person of ordinary skill,” which does
“not necessarily require explication in any reference or expert opinion.” See
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir.
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2009); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (examiner may rely
on “common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference”).
However, “the mere recitation of the words ‘common sense’ without any
support adds nothing to the obviousness equation.” Mintz v. Dietz &
Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012).
In our view, the Examiner here does more than recite “the words
‘common sense’ without any support.” Id. The Examiner finds that “sharp
edges are not as safe or comfortable to handle as rounded ones and []
rounded edges release more easily from molds by rounding out contact
regions.” Ans. 9. The Examiner has thus offered some reasoning with some
“rational underpinning” as required by controlling precedent. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007); In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006).
On this record, we thus affirm the rejection of claims 4 and 17.

Issue 5 (Dependent Claim 14)
Dependent claim 14 is directed to a “multi-channel pipette.”
Appellant argues that “the Examiner has merely concluded that a multi-
channel pipette was obviousness without providing an articulated reason
other than that processing plural samples was known in the art.” App. Br.
19. However, “the articulated reasoning for using the shaft in a multi-
channel pipette is to process plural samples simultaneously.” Ans. 9. Where
Appellant does not contest that multi-channel pipettes were known for this
purpose, id., the evidence supports a conclusion that using a multi-channel
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pipette as specified in claim 14 would have been obvious at the time of the
invention. On this record, we thus affirm the rejection of claim 14.

CONCLUSION
We affirm the rejection of claims 1, 4, 13, 14, and 17. We reverse the
rejection of claims 2, 3, 5-10, 15, 16, and 18-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED IN PART

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